Aldi v M&S decision: Jeremy Hertzog and Peter Nunn comment

Marks & Spencer has won its legal battle with Aldi at the Court of Appeal of England and Wales concerning the design of its 'light-up gin bottles' for the festive season. The judgment rejected Aldi's appeal, confirming that the German supermarket chain had violated Marks & Spencer's design rights. Mishcon de Reya Partners Jeremy Hertzog and Peter Nunn provided comments on the decision, as well as on a recent decision in a case brought against Aldi by Thatchers, and were quoted across various media publications.

Peter commented: "The Court of Appeal's decision will provide encouragement to registered design owners to bring enforcement actions against lookalike products.

"The finding that Aldi's lookalike gin bottles infringed M&S's UK registered designs can be contrasted with the recent High Court decision that a trade mark protecting the get-up of Thatchers Cloudy Lemon Cider drink was not infringed by Aldi's lookalike Taurus Cloudy Cider Lemon drinks.

"A product's get-up - packaging, shape and style - can be protected by both trade marks and registered designs. Both are desirable, but registered designs are cheaper, quicker and simpler to obtain, and it is often easier to show that they have been infringed. The Court of Appeal's decision shows the value of considering design registration protection for products and their get-up.

"Crucially, the Court of Appeal found that other variants of the registered design, which may have been disclosed by the designer in the one-year grace period it has to apply to register a design after releasing it, do not constitute "prior art" against which the novelty of the design is assessed. Had it found that they did, this would have greatly curtailed the utility of the one-year grace period for organisations which release variations on the design before deciding which is most valuable as M&S had."

Commenting on the Thatchers case, Jeremy said: “The court’s finding that Aldi had not taken unfair advantage of the goodwill and reputation in Thatchers’ trade mark is particularly interesting. Here, the court again placed emphasis on its conclusion that Aldi had endeavoured to stay on the right side of the line, that is, it had moved a sufficiently safe distance away, and therefore it did not have an intention to exploit Thatchers’ reputation and goodwill.”